from the this-is-stupid dept

As pretty much all of you have been sending in, our favorite open source electronics firm, Sparkfun, has found itself in the middle of yet another unfortunate intellectual property issue that highlights how broken intellectual property law continues to be. In short, SparkFun needs to pay to have $30,000 worth of multimeters (2,000 of them) destroyed because they're yellow and because trademark law is stupid. Basically, electronics maker Fluke holds trademark 2796480, which is described thusly:

The mark consists of the colors dark gray and yellow as applied to the goods. The dotted outline of the goods is intended to show the position of the mark and is not a part of the mark.

The trademark makes clear that it is not claiming a trademark on the color yellow, but rather dark gray and yellow applied to something that looks like this:

Now, here's Sparkfun's multimeter:

And, apparently, while having these 2,000 multimeters shipped from China to the US, they were stopped by Customs because of an ITC ruling (warning: big pdf file behind that link) that blocks the import of:

digital multimeters and products with multimeter functionality that have a contrasting color combination of a dark-colored body or face and a contrasting yellow border, frame, molding, overlay, holster or perimeter.

And this is based on claims that other companies were violating that Fluke trademark we discussed above. As the folks at Sparkfun point out, this is all kinds of ridiculous and immensely damaging to them:

Yellow is awfully broad: In my mind, multimeters have always been yellow. I’ve never had the opportunity to own a Fluke-branded DMM so I’m not sure where my brain picked up this association. I can respect trademarks and company branding and I respect Fluke’s reputation for high-quality multimeters. If Fluke wants to own a color I would expect the USPTO to require them to assign an exact color just like Tiffany’s did with Tiffany Blue. But allowing a company to trademark ‘yellow’ seems broad.

Wicked burden on small business: Trademark law is heavily skewed towards large business. Small business does not have the resources to stay abreast of all trademarks for all the products they don’t carry. If you’re going to put the onus on the little guy to avoid infringing IP then you shouldn’t need an army of consultants or attorneys to find this information. We will lose $30,000 on this shipment. But the cost of the legal legwork and manpower to make sure we don’t violate a future color seems unreasonable and simply not feasible.

No recourse: Our multimeters are actually kind of orange, not Fluke yellow. The document from the Department of Homeland Security is matter of fact. Where is the opportunity for recourse? What is the appeals process? Because of a $150 per day warehousing fee we are forced to decide quickly with limited legal guidance and mounting penalty costs.

Decide between bad and worse: So we really only have two options, ship them back or have them destroyed. Having them destroyed costs $150 per hour with no indication of how much time it will take to destroy 2,000 units. Returning them has been ruled out by the manufacturer in China because the import taxes in China are so steep (yay free trade) that bringing them back into the country to have them modified would be more expensive than paying for the return shipping and taxes. Between bad and worse, we have to have them destroyed. Sorry Earth.

To be fair, the first point is slightly misleading. This isn't a color trademark like Tiffany Blue or the variety of other trademarks that have issued in the past (though many of those are ridiculous in their own right), but a specific trademark about how the color is used on a specific product. It's still ridiculous and makes no sense, but it's not directly comparable to color trademarks (which, again, are also ridiculous).

Sparkfun is using the publicity around the blog post in the hopes that Fluke might grant them a brief license to save these multimeters, but admits that's unlikely. The company is also changing the color of its multimeters, but likely going to need to eat the cost of the ones about to be destroyed. Because trademark law is, yet again, pretty ridiculous.

Reader Comments

Short term solution

Maybe they could pay $20 per hour and have some folks repaint the edges. Hmmm, maybe $30 per hour and they could get some creative designs on those borders. Oh, on second thought maybe not, those artists will just claim extended rights and require a piece of any resale...

Yellow mean multimeter

Seriously. I've purchased multimeters at least a dozen times (I tend to lose them) and without exception, they were all yellow. When I'm looking for a multimeter, either at home or at the store (because I lost yet another one) what my eye is seeking is "yellow plastic box".

I doubt it was the yellow so much as the gray. But even there, the position of the gray differs from what is described in the design patent. This whole thing seems 100% bogus. Nobody is going to look at SparkFun's multimeter and think "Fluke".

Re: Yellow mean multimeter

Actually, my first reaction when seeing the picture was that this was a completely reasonable use of trademark enforcement, since it looks like a Fluke. I'm just a small-time hobbyist when it comes to electronics, but of all the meters I've seen they've been yellow and grey if and only if they've been Flukes. The same goes for computer network testing devices, which I have more experience with.

Since actual data beats anecdotes, I looked at the online catalog of ELFA, the biggest distributor of such things around these parts of the world. They have 123 digital multimeters. 28 are Flukes, and only one is not yellow with grey front (it's red with grey front instead). Of the 95 which are not made by Fluke, only 1 is yellow and grey.

Re: Re: Yellow mean multimeter

I'm just a small-time hobbyist when it comes to electronics, but of all the meters I've seen they've been yellow and grey if and only if they've been Flukes.

I'm currently looking at a yellow and grey multimeter. It isn't a Fluke. (and that isn't a fluke in the other sense either because other meters I've had have been similar colours - none of them Flukes). By a pure fluke my wife just showed me a picture of a ruggedise mobile phone - guess what - it's yellow and grey. Those colours are a universal code for "ruggedised". The yellow has a practical value as a high visibility colour.

Re: Re:

I have owned Fluke multimeters and this one does look similar. Fluke is known for top notch quality and features but you do pay for the name. I'm guessing this meter doesn't retail for even a third as the cheapest model of Fluke. If they had given some brand that even remotely sounded like Fluke they might have somewhat of a case. I worked as a mechanic for years and nobody I know would be stupid enough to think this was a Fluke. If they start making them red will Sears sue them?

Looks like Fluke has a case, after all. They are Rolls Royce of multimeters, a class in itself. Tons of money invested, and reliable product delivered for decades. And the color distincts them. And here comes Mr Smart Guy, who wants to scoop the creme riding on someone else's back. So, yes, if you try to stiff "competition" by pretending to be the other manufacturer, then you should pay dearly for your failed scam.

I see such stunts time and again. Purdy (paint brushes) is another example of "borrowing" color scheme to scam the competition.

I don't feel sorry for the "victim" of alleged trademark abuse here. In fact, I would sue their butts off myslef.

Rounded corners and the color yellow.

The color yellow simply isn't a good enough mark. It's supposed to be a trade MARK. That makes it something more like a logo or the brand name written down. The idea of "owning" a color is simply too expansive. It's not at all distinctive or identifiable.

It's more like a personal fashion preference than a way to identify something made by someone in particular.

Weak trademarks (and other forms of "intellectual property" run amok) are like the Rhine river robber barons that used to make you pay a toll every 5 miles. They're leeches that suck all of the viability out of the market and ultimately destroy it.

Re:

There is no indication whatsoever that was his motive. There's every indication it was not. The design is not a clone of Fluke's, the color is commonly used for multimeters of all brands, etc. Why do you think he's lying when he says he just didn't know?

Re: Re:

He says in his blog post that he associates the color yellow with multimeters. That's precisely because Fluke has such a great reputation, and because they're defended their trademark.

I'm pretty middle of the road on trademark and copyright maximalism, but in this case, I'm with the Big Bad Business. They've invested millions, for years, to establish their rep. This guy knew the rep. And chose Fluke's colors to ride the coattails.

Re: Re:

...all because of Fluke's fame. Fluke was making distinct for long decades. Long before all the knock offs came around.

"Why do you think he's lying when he says he just didn't know?"

... because it is a long process from an idea to the store shelf. There is no way, you would invest in any knock off, not knowing what's there already on the market.

To be fair, all the professional Fluke owners laugh at cheap stunt. But still, they scoop part of the market that can't recognise difference.

And why would they be allowed? If I invented something and put my signature on it, I would be protected. Color is a signature here. There are plenty of color combinations left out there for multimeters (or any other product). In fact, if I created my new multimeter, it would have distinct color siganture competitive to Fluke's. That is how healthy capitalism supposed to work. Doesn't it?

Re: Re: Re:

"There is no way, you would invest in any knock off, not knowing what's there already on the market."

It's not that much of an investment, really. They're jsut reselling cheapie multimeters made by a different company, and it's not even the main business that SparkFun engages in.

In any case, I'm not saying they didn't know that yellow was used by Fluke. I'm saying that their claim that they didn't know about the design patent is completely plausible. The one multimeter I've managed to hold onto is a Fluke (because something that expensive doesn't leave my workbench) and I've been using it for years. I had no idea that there was a design patent, and if I decided to import cheap multimeters to sell domestically, I could see running into the exact same problem.

I'm not saying that the design patent should be invalid or anything (I don't know enough about that to have an opinion). But I am saying that given the history of SparkFun, the nature of their business and of this particular product, it's a serious stretch to assign nefarious intent to this.

Re: Re: Re:

"You think it's just a coincidence that they chose yellow/dark gray, which just so happens to be the market leader's distinctive color scheme."

That seems the most likely explanation to me, yes. Using the yellow isn't damning at all. Yellow does not imply "Fluke". Where they went wrong is using the gray.

But consider -- this multimeter in no way competed with Fluke. Fluke makes high-end multimeters, not ones like these. These are entering a field that is absolutely saturated with makers of yellow multimeters at the same price point.

Also, this isn't anything like a major product on the part of SparkFun. They make their money from selling other things, not multimeters. The multimeter is just part of their "convenience" sideline, selling inexpensive versions tools needed to make use of their actual product line.

Re: Re: Re: Re:

But consider -- this multimeter in no way competed with Fluke. Fluke makes high-end multimeters, not ones like these. These are entering a field that is absolutely saturated with makers of yellow multimeters at the same price point.

Exactly. They could have copied the shape, dimensions, colors, and almost everything else perfectly and it's still unimaginable they would have confused a single Fluke customer.

Re: Re: Re:

Yellow is well known for making things stand out in in a field of view. White on black or dark gray makes marking easily read under marginal lighting conditions. It is therefore not surprising that other manufacturers use a similar color scheme; as it is optimal for a device that can be used, but should not be left, in places like under the hood of cars.

Re: Re:

Why? Fluke tries to sell their overprized DMMs to some hobbyists and makers. The cheap DMMs still have to be dumped. Security is important, but not for 5V Arduinos. Though, Fluke seems to be a nice bully :-)

I've never heard about this Fluke brand, i live in Brazil, and most multimeters i've seem are either black, or in this color scheme trademarked by Fluke. And i've worked with quite a few multimeters in my life, and own a couple.

Re:

They can't, customs won't release them as-is, so the only way to change them would be to ship them back to the plant in China to have it done, then ship them back to the US. But as the article notes, import taxes into China are so high as to make that option more expensive than just destroying them.

Not to mention that even if customs themselves could be persuaded to do this, they'd still charge $150 an hour to do it (same labor costs as for destroying them) and $150 a day for warehousing them during the change.

design feature

though all meters were yellow so you could see them on a crowded/messy work enviroment. much like a car has a wheel in each courner.

but if you need to deal with these meters, you can use this whole trademark fiasco to sell the meters, get the meters into your own warehuse as a 'team building exercise' one weekend get the office staff in (including purchasing officer) and unpack, spray or paint meters, it doesn't need to be a good job, you can even use children's watercolour paint, avoids OH&S problems. repack the meters (old fashioned thin plastic bag with instructions stapled on top)

sell on website at proposed price they would have been sold at anyway, have links to articles like this. there may be a few sympathy buys, it will all reduce the size of this disaster.

$30,000 / 2000 meters = $15 each. Since that is probably wholesale even with 100% markup they would retail at $30. Don't remember exactly but I think I paid well over $300 for a Fluke meter several years ago. Fluke is well known to be top of the line equipment. I don't think anyone would think they were getting a Fluke for $30.

This is actually a little more complicated than it may appear on the surface. While it's true that yellow and grey have become standard colors for multimeters, that hasn't always been the case. Until about 15 or so years ago most of the meters I saw were black or red or occasionally blue. It has always been my impression that the shift toward yellow and orange bodies with grey or black faces was primarily intended to make them look like Flukes. And yes Fluke meters really are that much better than the hobbyist units most people buy.

On top of that, these particular meters aren't just colored like Flukes, they're clearly knockoffs of Fluke's design. I'm sure that's not because Sparkfun asked for it. These are almost certainly a commodity model designed exclusively by the manufacturer and sold under numerous brands - probably even as counterfeit Flukes in some parts of the world.

The problem is none of that makes this any more defensible. The people who might confuse one of these meters for a Fluke aren't the same people who are going to shell out several times as much money for the real thing. They are, in that respect, more like knockoff handbags. They might fool some people, but those people aren't Fluke's customers. Furthermore, the other Fluke design elements they're copying are functional, not decorative. They're not supposed to be relevant in the first place.

The best case scenario for Fluke is these meters were never competition for their products at all and removing them from the market has absolutely no impact on their market position. At worst they're alienating some number of electronic hobbyists, a community which seems to be growing steadily thanks to products Sparkfun is known for, like the Arduino. Some of those hobbyists will certainly decide to upgrade to better quality tools at some point and decide to look a lot closer at Fluke's real competitors than they would have otherwise.

The more they look, the more likely they are to realize they can go with one of those other brands for less money, and likely without losing anything that's going to make a difference for them. And whatever they end up with will probably look just as much like a Fluke as these Sparkfun units.

One: The filing was in 2008, which means six years went by without a word until now. What changed and who ordered the stoppage?

Two: Fluke's trademark is in conjunction with the removable case and the color of the multimeter. In other words: Fluke is recognized for the casing and the yellow multimeter, not the yellow band around the meter.

Basically put: the colors are reversed and no one will mistake this multimeter as a Fluke.

I will say this: If Fluke was the one which ordered the ITC to intercept this shipment, they lost another customer.

I have a Fluke 88V. The yellow part is a rubber casing to give protection when you inevitably drop it. Slide it off and the meter is completely gray. The yellow part on these cheap meters looks like it is just part of the hard plastic case?

Crossing a Yellow tape with out permission may or may not get you fired.

Crossing a Red tape is an immediate firing and removal from site situation.

Unfortunately this may or may not [depending on the OSHA inspector] apply to instruments.

This raises some interesting issues. If you leave a yellow multimeter connected and your partner disconnects [under your instructions] does OSHA require management to fire him or not.

So I am on top of the boiler 10 stores up and I radio my coworker to disconnect the multimeter and bring it up with him and the OSHA inspectors sees him disconnect the meter what happens? Is he fired on the spot or not?

One thing to note is that most knockoff multimeters, although they may advertise a cat III or cat IV rating, don't actually have a proper protection and shouldn't be used on electric mains. A $15-30 multimeter is almost certainly not properly protected against arc flash. And while Fluke may not have a huge presence in some corners of the world, in the US and Canada they're the biggest, most well-known player. There are other makers of good multimeters, but they're all fairly different from the Flukes in looks if not function.

yellow and gray meter.

I own 2 multimeters and actually use 3. Two of them are Flukes. One of those Flukes is gray and the other is beige. My at home meter is gray - matter of fact it is the same gray color that the one of the Flukes is. Go figure. How will I ever figure out which one is which? Oh wait - they have different names and do completely different things...

I find it funny that nobody is alarmed at the fact that you can trademark a spectrum of visible light reflecting off some objects.... (And notice here I didn't just say a "spectrum of visible light", but the action of reflecting off a certain object)

Are people in charge really THAT stupid ?

Plus identifying a brand with a color is awfully dumb and shallow.. For one, what about color blind people, you're not going to get brand fidelity from having them identify a color to a brand.. Not to mention, it doesn't protect them from scam or buying counterfeits..And what about someone who actually love that exact color and has it robbed from it ? That someone won't be able to sell its multimeters that color ever.. It might not seem like much, but considering that there were no real reasons why not in the first place..

Why do people want to control things nobody can without forcing everyone to comply using threats ? Mainly honest people I might add..

Why are these people bothering over stupid things like that, when counterfeiters are still universally unthreatened ? Wasn't the whole point of trademarks to avoid scams and counterfeiters ?

Why isn't it working then, even though we're at the point the measures are so severe that we shake down small companies over petty squabbles ?

I'm a man of results, and when I look at this, and I don't see any, I conclude its a waste of time and money.. GG no RE Trademarks...

Better find something else to differentiate from others.. I actually bought counterfeits on purpose on quite a few occasions, because the actual counterfeits were in some aspects better for my needs than the genuine products..

Re:

I find it funny that nobody is alarmed at the fact that you can trademark a spectrum of visible light reflecting off some objects....

"But allowing a company to trademark ‘yellow’ seems broad. "

"This isn't a color trademark like Tiffany Blue or the variety of other trademarks that have issued in the past (though many of those are ridiculous in their own right), but a specific trademark about how the color is used on a specific product. It's still ridiculous and makes no sense, but it's not directly comparable to color trademarks (which, again, are also ridiculous). "

They didn't use the word "alarmed" but the situation was definitely mentioned.

This is great until Agilent trademarks orange and dark gray, Wavetek trademarks red and dark gray, BK Precision trademarks blue and white, Dranetz trademarks blue and dark gay, and TPI trademarks green and dark gray. Some lucky new company will be left with having to register the chartreuse and mauve trademark.

Killed by Electic SPARK is FUN?

Sparkfun imported those multimeters from Victor in China. Victor was already a respondent in the "Cease and Devise" trade-dress violation order in 2009. So Sparkfun/Victor intentionally violated.Is it FUN to get people killed by an electric spark using a sub-standard multimeter that falsely claim CAT3 rating and has a CE label that just only means "CHINA EXPORT"?

This is insanity in its highest form!!

This is total crazyness just imagine not being allowed to use a color on a product because some one else is using it. I do understand where Fluke are coming from because why exactly have you got the yellow where we have our yellow and why have you got the gray where we have so its kind of a hmmm but insanity lol. For the fact you've now got to fork out $30,000 is a p take!http://www.youtube.com/watch?v=lkx2mxS_RSQ